DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/909434, filed on 09/05/2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant’s arguments, see page(s) 12, filed 5/13/2026, with respect to the objection(s) to the abstract have been fully considered but they are not persuasive. The amended abstract does not address the objection. This objection is maintained.
Applicant’s arguments, see page(s) 12-13, filed 5/13/2026, with respect to the objection(s) to the specification have been fully considered and are persuasive. The associated objection(s) to the specification has/have been withdrawn.
Applicant’s arguments, see page(s) 13-14, filed 5/13/2026, with respect to the rejection of claim(s) 1-18 under 35 U.S.C. 112(a) have been fully considered but they are not persuasive.
Regarding the argument:
“Firstly, in the original disclosure, as shown in with steps 101 to 106, one example of a communication between a fingerprint card and a terminal has been explained in detail.”
Examiner respectfully disagrees. Note that steps 101 through 106 merely recite the steps claimed in the invention, and provide no structure or description of how said communication is accomplished.
“Secondly, any manner of communication between a fingerprint card and a terminal is well- known to those skilled in the art, and constitutes common knowledge, requiring no detailed recitation of specific hardware structures in the specification.”
Examiner respectfully disagrees and notes that a method of performing a function being well-known does not preclude the requirement of a sufficient written description. A “detailed recitation” is unnecessary; however, some recitation that indicates how the applicant intends to perform a claimed function is required for a written description to be deemed sufficient in accordance with 35 U.S.C. 112(a).
“In particular, contactless smart cards communicate with readers in full compliance with international standards such as ISO/IEC 14443, which specify physical characteristics, radio frequency interfaces, and transmission protocols. These standards are fundamental norms that those skilled in the art must know and follow when designing a fingerprint card.”
Examiner notes that the specification is silent regarding being in compliance with ISO/IEC 14443 or any other recognized standard, international or otherwise. Even assuming, arguendo, the specification mentioned a standard, it would not then incorporate by reference every possible configuration under said standard. A sufficient written description is still required for functions which are explicitly claimed.
“Regarding hardware implementation, contactless smart cards typically adopt a standardized architecture comprising an antenna coil and a radio-frequency analog front-end (including modulation/demodulation circuits). Such components have long been integrated into mainstream smart card chips available from major manufacturers, enabling those skilled in the art to implement communication between a fingerprint card and a terminal based on common general knowledge.”
“Moreover, authoritative textbooks on smart card technology have systematically described a communication architecture of smart cards, further evidencing that these techniques fall within the routine knowledge of those skilled in the art.”
Examiner references answer to argument above regarding well-known methods requiring sufficient written description. That one of ordinary skill in the art may be able to produce a smart card with communication capability does not preclude the requirement of a sufficient written description of how, specifically, the claimed invention performs communication.
“Under the written description requirement of 35 U.S.C. § 112(a), a specification need not set forth conventional technical details that are already known to those skilled in the art. As established by CAFC case law, … matters that would be obvious to those skilled in the art need not be described in exhaustive detail. …”
Examiner respectfully disagrees and notes that “exhaustive detail” is not required. The rejection in the previous application is directed to the fact that the application contains no written description of a means to perform wireless communication at all.
“… The hardware components relied upon for communication between a fingerprint card and a terminal, such as the RF interface, antenna design, and modulation/demodulation circuits, are standard features in the smart card field. Even though the specification does not list these hardware details individually, when considered in light of the common knowledge of those skilled in the art, it remains sufficient to demonstrate that the inventor(s) were in possession of the claimed invention as of the filing date.”
Examiner respectfully disagrees. On the contrary, that what applicant refers to as a “standard feature,” which is necessary for the performance of claimed functions, is not present in the written description only further calls into question whether the inventor(s) were in possession of the claimed invention at the time of filing.
For the reasons provided above, this rejection is maintained.
Applicant’s arguments, see page(s) 13-14, filed 5/13/2026, with respect to the rejection of claim(s) 1-18 under 35 U.S.C. 112(b) have been fully considered.
Regarding the argument directed to claims 1, 7, and 13:
This argument is persuasive. The associated rejection is withdrawn.
Regarding the argument directed to claims 5, 11, and 17:
“Applicant submits that the term "transaction refusal flag" is well-defined in the art and in the context of the Specification.”
Examiner respectfully disagrees. “Transaction refusal flag” is not well-defined in the art. In the context of refusing transactions, examples of terms which are known in the art include, “decline code,” “terminal action code,” “issuer action code,” and “fallback flag.” Each of these terms are used differently in the art, and may be used in the context of refusal of transactions. The claims are indefinite where they are not clear to which, if any, of these codes are referred. As to the context of the specification, no additional context is provided beyond what is present in the claims (that the flag is “set” based on some condition being met). The associated rejection is maintained.
Applicant’s arguments, see page(s) 15-18, filed 5/13/2026, with respect to the rejection of claim(s) 1-18 under 35 U.S.C. 103 have been fully considered but they are not persuasive. These rejections are maintained.
Regarding the argument:
“The present invention is related to a fingerprint card transaction communication method, which deeply integrates a fingerprint verification and a standardized transaction interaction.
“The claimed invention takes three standardized terms with distinct functions: PDOL (Processing Options Data Object List), AIP (Application Interchange Profile), and AFL (Application File Locator).
…
“These three terms are deeply linked with features such as fingerprint collection, verification, and transaction refusal judgment …”
Examiner respectfully disagrees. The invention recites standard steps of Europay, Mastercard, and Visa (EMV) transactions (PDOL, AIP, AFL) as part of the normal transaction flow. The steps involving fingerprint authentication are performed only on the card, and occur between the SELECT command (described in the claims as a Processing Options Data Object List request) and the return of the PDOL from the card to the terminal. This process is inherently modular and requires only that the terminal wait until it is complete.
Regarding the argument:
“ALMERS discloses a progressive fingerprint enrollment method for fingerprint cards, which only focuses on the background establishment of fingerprint templates. …
“ALMERS does not involve any standardized card-terminal interaction technical features related to PDOL, AIP or AFL, nor does ALMERS include designs such as terminal type judgment, transaction type acquisition, or transaction refusal judgment based on an application controller.”
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The prior art of ALMERS is not mapped to features related to PDOL, AIP, and AFL, nor to judgement or acquisition of terminal type. ALMERS provides evidence that the use of fingerprints as authentication in the context of EMV transactions is known in the art.
Regarding the argument:
“HILL is related to a method for reducing an interaction time of contactless transactions, and optimizing the standardized instruction interaction between cards and terminals.
…
“Although HILL involves PDOL, AIP and AFL, HILL does not involve any technical content related to fingerprint collection or fingerprint verification, nor does HILL include a design integrating fingerprint verification with the standardized interaction process.”
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The prior art of HILL is not mapped to features related to fingerprinting. HILL provides evidence that the portions of the claimed transaction taking place between an Integrated Circuit Card (ICC) and a Point of Sale (POS) terminal are known in the art.
Regarding the argument:
“Those skilled in the art would have no motivation to modify and apply the standardized smart card operations of HILL to the smart card fingerprint verification solution of ALMERS in order to adopt a globally used standard for commands between chip cards and card readers.”
Examiner respectfully disagrees and notes that no evidence for the alleged lack of motivation is provided; applicant has simply restated the motivation provided in the office action. Examiner further notes that applying a biometric solution such as fingerprint verification to a smart card is the motivation to combine the references.
“Any man-made combination of HILL and ALMERS without any hint ignores an essential differences[sic] in the core inventive purposes, technical fields, and technical solutions thereof.
“The technical purposes of HILL and ALMERS are independent of each other, and their technical field focuses are completely different. More critically, there is no functional relevance between HILL and ALMERS.”
Examiner notes that there is no requirement for prior art references to be “independent of each other,” nor any “functional relevance” between references. Nonetheless, examiner notes that the inventions of HILL and ALMERS are directed to fingerprint authentication using a smart card, and smart card transactions, respectively. These concepts can hardly be said to have no functional relevance to each other. Additionally, the motivation provided in the previous office action easily meets valid rationales for combining references, including: “(A) Combining prior art elements according to known methods to yield predictable results;” “(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;” and “(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;” (MPEP 2143).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL. — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 7, and 13:
Claim 1 recites, “… receiving, by the fingerprint card, an instruction … from a terminal …”. The claim also recites, “… sending … to the terminal a waiting time extending instruction …”. The claim also recites, “… returning … to the terminal a response comprising an Application Interchange Profile and an Application File Locator …”. The claim also recites, “… returning, … to the terminal a read record …”. Claims 7 and 13 recite similar language. These limitations lack adequate written description. Neither the claims nor specification provide any description of a means by which the “fingerprint card” may communicate with the “terminal.” Page 6 of the specification teaches that the “IC card can be … capable of transaction communication with a reader device using wireless communication technology.” However, this does not constitute adequate written description, as no structure is described or illustrated which could perform this function. While page 6 of the specification goes on to teach that “the IC card … includes a card body, an IC chip, a fingerprint scanner, and a control unit”, the specification is silent as to any other hardware or circuitry, particularly any hardware or circuitry capable communicating with a “reader device” or terminal, wireless or otherwise. It would therefore be unclear to one skilled in the art that the inventor(s) had possession of the claimed invention at the time of filing.
Regarding claims 2-6, 8-12, and 14-18:
They are dependent on one or more rejected claims, and thus inherit those rejections. This rejection could be overcome by overcoming the rejection(s) to any claims upon which these claims depend, or by amending the claims such that they are no longer dependent on any rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 5, 11, and 17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim(s) 5, 11, and 17:
Claim 5 recites, “… setting, by the fingerprint card, a transaction refusal flag according to the rules stored in the fingerprint card.” Claims 7 and 13 recite similar language. This limitation is indefinite because it is unclear to what element the claimed “transaction refusal flag” is being applied, or what value is used as said flag. This rejection can be overcome by providing detail which would inform one skilled in the art where or how the claimed flag is being applied.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 6-9, 12-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over ALMERS et al (Doc ID US 20200005304 A1), and further in view of HILL et al (Doc ID US 20070118483 A1), SÖDERBERG et al (Doc ID US 20230140424 A1), and CHATTERTON et al (Doc ID US 20160171361 A1).
Regarding claim 1:
ALMERS teaches:
obtaining, by the fingerprint card, a fingerprint of a user ([0040] "... The next time the user is to interact with a POS terminal 302 ..., the process of acquiring partial fingerprint representation of a portion of the user's fingerprint and extracting fingerprint features 308 is performed.");
verifying, by the fingerprint card, the fingerprint of the user ([0040] "… a similarity level is determined, S4, between the present set of extracted features 308 and the previously extracted fingerprint features 306. Specifically, the matching process implements a scoring functionality ...");
obtaining, by the fingerprint card, a fingerprint verifying result ([0041] "… If the score exceeds a certain threshold, the decision is match …");
determining, by an application controller in the fingerprint card, that a transaction with the specific transaction type is not refused ([0044] "… If a matching is conformed[sic], the authentication is performed and the payment will be made.");
HILL teaches the following limitation(s) not taught by ALMERS:
A method for communicating with a fingerprint card to perform transaction, comprising: receiving, by the fingerprint card, an instruction comprising a Processing Options Data Object List request from a terminal ([0035] "… the requires[sic] details may be provided in a list of terminal data objects (e.g., PDOL) associated with the reader 10." and [0036] "... the reader 10 transmits a third command message (e.g., GPO) to the card 22 responsive to the card's request for details concerning the capabilities of the reader 10 and transaction specific requirements ...");
obtaining, by the fingerprint card, a specific transaction type in the Processing Options Data Object List request ([0036] "… The third command message may comprise values for any number of data elements requested by the card 22. Various data element values indicate the type of transactions supported by the reader 10 …");
returning, by the fingerprint card, to the terminal a response comprising an Application Interchange Profile and an Application File Locator ([0039] "… the response may include an application file locator (AFL) ..., an application interchange profiles (AIP) …"); and
returning, by the fingerprint card, to the terminal a read record retrieved according to the Application File Locator ([0041] "... the reader 10 transmits a fourth command message (e.g., READ RECORD) to the card 22 .... The fourth command message may serve as a request for the records indicated in the application file locator .... Responsive to the fourth command message, the card 22 transmits the appropriate records to the reader 10.").
Obtaining a fingerprint with a smart card, verifying the fingerprint, and allowing or refusing a transaction based on the verification are known techniques in the art, as demonstrated by ALMERS. Further, exchanging a Processing Options Data Object List (PDOL), transaction type, Application Interchange Profile (AIP), Application File Locator (AFL), and read records between a smart card and terminal are known techniques in the art, as demonstrated by HILL. It would have been obvious to a person having ordinary skill in the art (PHOSITA) before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS with the standardized smart card operations of HILL with the motivation to use a well-known and globally used standard for commands issued between “chip cards” and card readers devices.
SÖDERBERG teaches the following limitations not taught by the combination of ALMERS and HILL:
sending, by the fingerprint card, to the terminal a waiting time extending instruction at a preset time interval ([0077] "FIG. 7 shows a timing diagram illustrating re-occurring WTX requests and the time periods required for the sensor 102 to capture fingerprint images.");
Sending a Wait Time Extension (WTX) during fingerprint capture is a known technique in the art, as demonstrated by SÖDERBERG. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS and HILL with the WTX instruction of SÖDERBERG with the motivation to ensure that a terminal being interacted with does not time out during the extra time needed for the smart card to obtain the user’s fingerprint.
CHATTERTON teaches the following limitations not taught by the combination of ALMERS, HILL, and SÖDERBERG:
determining, by the fingerprint card, that a terminal type of the terminal matches a specific terminal type ([0056] "… the payment card 10 may detect the type of card reader based on the pattern of magnetic signals detected at the read sensor 260.");
Determining a terminal type being interacted with by a smart card is a known technique in the art, as demonstrated by CHATTERTON. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, and SÖDERBERG with the terminal type determination of CHATTERTON with the motivation to provide terminal details to the card, which may then use that data to make decisions about interaction with the terminal in the future.
Regarding claim 2:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein obtaining, by the fingerprint card, the fingerprint verifying result (ALMERS [0041] "… If the score exceeds a certain threshold, the decision is match …");
then stopping, by the fingerprint card, sending the waiting time extending instruction to the terminal (SÖDERBERG [0077] "FIG. 7 shows a timing diagram illustrating re-occurring WTX requests and the time periods required for the sensor 102 to capture fingerprint images.").
Discontinuing sending of a WTX to a terminal is a known technique in the art, as demonstrated by SÖDERBERG. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the WTX of SÖDERBERG with the motivation to allow the terminal to continue processing the transaction after the fingerprint is collected.
Regarding claim 3:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein the transaction is not refused by the application controller in the fingerprint card, according to the fingerprint verifying result, the specific transaction type and the specific terminal type (ALMERS [0044] "… If a matching is conformed[sic], the authentication is performed and the payment will be made.").
Regarding claim 6:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein obtaining, by the fingerprint card, the fingerprint verifying result comprises: determining, by the fingerprint card, whether a value of fingerprint obtaining retry times exceeds a preset count limit (ALMERS [0021] "… locking also may be done in case authentication attempts failed reaches an unacceptable level.").
Regarding claim 7:
ALMERS teaches:
A fingerprint card, comprising: a processor; an input/output device coupled to the processor; and a memory in communication with the processor, in which the memory stores instructions, configured to cause the processor to ([0035] The processing circuitry 104 further comprises a memory …" and "Where the processing circuitry 104 includes a ... Microprocessor ..., the processor may further include computer executable code that controls operation of the programmable device."):
The remainder of this claim’s limitations are rejected with the same prior art mapping and justification, mutatis mutandis, as its counterpart claim 1.
Regarding claims 8, 9, 12-15, and 18:
These claims are rejected with the same justification, mutatis mutandis, as their counterpart claims 1-3, 6, and 7 above.
Claims 4, 5, 10, 11, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over ALMERS et al (Doc ID US 20200005304 A1), HILL et al (Doc ID US 20070118483 A1), SÖDERBERG et al (Doc ID US 20230140424 A1), and CHATTERTON et al (Doc ID US 20160171361 A1) as applied to claims 1, 7, and 13 above, and further in view of GARDINER et al (Doc ID US 20160217453 A1).
Regarding claim 4:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1,
GARDINER teaches the following limitation(s) not taught by the combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON:
wherein the transaction is refused or not refused by the application controller in the fingerprint card, based on one of the following rules stored in the fingerprint card: for any terminal, refusing any transaction if a fingerprint verifying result is not successful ([0036] "… The cardholder may then be required to provide a fingerprint scan for comparison with the biometric data in the ... record.", [0037] "... the authentication system 5 may authenticate the received biometric data ...", and [0038] "… At step S2-16, the merchant application 7a may complete or cancel the transaction, depending on the received authentication result.");
for a terminal with the specific terminal type, not refusing a transaction if a fingerprint verifying result is not successful; and
for any terminal without the specific terminal type, refusing the transaction if the fingerprint verifying result is not successful.
Refusing a transaction when a fingerprint verification is unsuccessful is a known technique in the art, as demonstrated by GARDINER. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the cancelled transaction of GARDINER with the motivation to prevent the smart card from processing a transaction where the identity of a user cannot be verified. It is obvious to cancel a transaction rather than giving an unlimited amount of attempts to authenticate.
Regarding claim 5:
The combination of ALMERS, HILL, SÖDERBERG, CHATTERTON, and GARDINER teaches:
The method of Claim 4, wherein the method further comprises: setting, by the fingerprint card, a transaction refusal flag according to the rules stored in the fingerprint card (GARDINER [0036] "… The cardholder may then be required to provide a fingerprint scan for comparison with the biometric data in the ... record.", [0037] "... the authentication system 5 may authenticate the received biometric data ...", and [0038] "… At step S2-16, the merchant application 7a may complete or cancel the transaction, depending on the received authentication result.").
Refusing a transaction when a fingerprint verification is unsuccessful is a known technique in the art, as demonstrated by GARDINER. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the cancelled transaction of GARDINER with the motivation to prevent the smart card from processing a transaction where the identity of a user cannot be verified. It is obvious to cancel a transaction rather than giving an unlimited amount of attempts to authenticate.
Regarding claims 10, 11, 16, and 17:
These claims are rejected with the same justification, mutatis mutandis, as their counterpart claims 4 and 5 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
ITO (Doc ID US 20070106905 A1) recites many of the same features as claimed in the instant application. However, it is directed to a card reader device as opposed to the card itself.
https://ambimat.com/step-by-step-how-does-a-emv-contact-card-payment-work/ is a website which explains the EMV transaction process and shows that several of the steps taken by the disclosed invention are steps which are well-known in the art. This reference is relevant as a background document but is not specific to the concepts of fingerprint verification as claimed in the instant application.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON BINCZAK whose telephone number is (703)756-4528. The examiner can normally be reached M-F 0800-1700.
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/BB/Examiner, Art Unit 2437
/ALEXANDER LAGOR/Supervisory Patent Examiner, Art Unit 2437
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